Are there any exceptions to the rule against mixing product and process elements in a single claim?
While the general rule discourages mixing product and process elements in a single claim, the MPEP 2173.05(p) does provide some nuance. It states:
“In contrast, when a claim recites a product and additional limitations which focus on the capabilities of the system, not the specific actions or functions performed by the user, the claim may be definite under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.”
This suggests that claims can include both product elements and functional language describing the product’s capabilities without necessarily being indefinite. The key is to focus on the system’s capabilities rather than specific user actions or method steps.
Additionally, product-by-process claims, which define a product in terms of its manufacturing process, are considered proper and are an exception to this general rule.
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